Ex Parte Flinn et al

Patent Trial and Appeal BoardJul 1, 2015

13027042 (P.T.A.B. Jul. 1, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/027,042 02/14/2011 Steven Dennis Flinn MW-20B 6020 53928 7590 07/01/2015 MANYWORLDS, INC. IP DEPARTMENT 4718 CASTLEWOOD STREET SUGAR LAND, TX 77479 EXAMINER BHARADWAJ, KALPANA ART UNIT PAPER NUMBER 2129 MAIL DATE DELIVERY MODE 07/01/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEVEN DENNIS FLINN and NAOMI FELINA MONEYPENNY ____________________ Appeal 2013-002476 Application 13/027,042 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, JOHN G. NEW, and ADAM J. PYONIN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-002476 Application 13/027,042 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claims Exemplary claims 1 and 18 under appeal read as follows: 1. A computer-implemented experimentation method, comprising: selecting a first experiment, wherein the selecting of the first experiment is based, at least in part, on an expected value of information of the experiment; performing the first experiment, wherein the first experiment is executed on a processor-based computing device; inferring automatically a user preference from a plurality of user behaviors that occur after execution of the first experiment; and selecting a second experiment based, at least in part, on the inferred preference. 18. An adaptive decision method, comprising: simulating on a processor-based computing device an experimental infrastructure, wherein the simulating comprises applying a plurality of probabilities; determining a value of information that is expected to be generated by an implementation of the experimental infrastructure based, at least in part, on the simulation of the experimental infrastructure; and generating an expected value of the experimental infrastructure based on the expected value of information and an expected cost of the experimental infrastructure. Appeal 2013-002476 Application 13/027,042 3 Rejections on Appeal The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Miyake (US 2009/0055147 A1; Feb. 26, 2009) and Bankes (US 2006/0004558 A1; Jan. 5, 2006) (Final Action 2). Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: There is no teaching or suggesting in Miyake of selecting an experiment based on an expected value of information of the experiment. The Examiner's argument that Miyake paragraph 0052, “cell of experimental interest” discloses "expected value of information" (Final Office Action, page 3 paragraph 1) is an unreasonable reading of "expected value of information." “Value of information” is a term of art in the field of decision analysis (and is sometimes also referred to as “value of clairvoyance”) that is described in Appellant’s specification, and would have been known by one of ordinary skill in the art at the time of the invention . . . . Simply reciting the specifying of a cell or any other object of experimental interest does not, under any reasonable interpretation, teach or suggest the claimed feature of expected value of information. App. Br. 9. 2. Appellants present for claim 11 (App. Br. 21) and claim 18 (App. Br. 28) contentions analogous to above contention 1. Issues on Appeal Did the Examiner err in rejecting claims 1, 11, and 18 as being obvious? Appeal 2013-002476 Application 13/027,042 4 ANALYSIS Value of information is a recognized term of art that correlates to pricing or other financial measurements: Value of information - Maximum price one should pay for knowing the actual value of an uncertainty before deciding on a course of action. (www.businessdictionary.com, retrieved from archive.org (Dec. 22, 2010)). Value of information (VOI or VoI) is the amount a decision maker would be willing to pay for information prior to making a decision. (Wikipedia.com, see https://en.wikipedia.or g/w/index.php?title=Value_of_information&oldid=383852270 (2010)). Value-of-information (VOI) methods determine the worth of acquiring extra information to help the decision- maker. From a decision analysis perspective, acquiring extra information is only useful if it has a significant probability of changing the decision-maker's currently preferred strategy. The penalty of acquiring more information is usually valued as the cost of that extra information, and sometimes also the delay incurred in waiting for the information. (VOSE Software web page, see http://vosesoftware.com/ModelRiskHelp/index.htm#R isk_Management/Value_of_information.htm, copyright 2007). As to above contentions 1 and 2, we agree with Appellants’ contentions that Miyake’s “cell of experimental interest” does not teach or suggest an “expected value of information,” as claimed. See App. Br. 9. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1–20 as being unpatentable under 35 U.S.C. § 103(a). (2) On this record, these claims have not been shown to be unpatentable. Appeal 2013-002476 Application 13/027,042 5 DECISION The Examiner’s rejection of claims 1–20 is reversed. REVERSED1 kme 1 Appellants’ Specification at page 6 discloses that this invention is directed to “financial metrics,” and at page 15 discloses that “actions” in the invention include “financial and other business modeling.” Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the Director's examination guidance on patent eligible subject matter. See 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74619 (Dec. 16, 2014)(and any updates thereof), which supplements the “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014.